Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JOHN HARVEY & SONS LIMITED
Serial No. 74/129,357
September 6, 1994
Hearing: October 26, 1993
Donna Mirman
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Rice, Cissel & Quinn
Administrative Trademark Judges
Opinion by Quinn
Administrative Trademark Judge
An application has been filed by John Harvey & Sons Limited to register the mark HARVEYS BRISTOL CREAM for "bakery goods, namely cakes." [FN1]
The Trademark Examining Attorney issued a final refusal based, in her words,
on the grounds that the applicant has refused to comply with a disclaimer requirement pursuant to Section 6 of the Trademark Act, of the descriptive wording "Bristol Cream" under Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2), or alternatively to register the mark, in part as to "Bristol Cream" pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. Section 1052(f).
(Appeal brief, p. 1). [FN2] Applicant filed, in its reply brief, a disclaimer of the word "Cream" apart from the mark. The disclaimer is accepted and hereby entered. Thus, the only issue remaining on appeal is whether the word "Bristol," when applied to applicant's goods, is primarily geographically descriptive of them under Section 2(e)(2) of the Act. [FN3] When the refusal was made final, applicant appealed. Applicant and the Examining Attorney submitted briefs and both appeared at an oral hearing before the Board. [FN4]
The Examining Attorney contends that Bristol is the name of a place (Bristol, England) known generally to the public and that a goods/place association is presumed because applicant's goods come from the geographical place named in the mark. In support of her position the Examining Attorney relied upon an excerpt from Alexis Lichine's New Encyclopedia of Wines & Spirits (5th ed. 1979) which shows the following listings:
Bristol Cream: sweetened old Oloroso Sherry bottled in Bristol, England.
*****
Cream Sherry: A heavily sweetened Oloroso. It was developed in Bristol, England, and is now extremely popular in the United States also. Some Cream Sherries are bottled in Bristol from Oloroso sent in cask from Jerez [Spain]; and Creams are now produced in Jerez also to meet the growing demand-- although Bristol Cream and Bristol Milk are of course bottled in Bristol.
The Examining Attorney also pointed to prior registrations owned by applicant wherein applicant claimed the benefits of acquired distinctiveness under Section 2(f) as to the words "Bristol Cream," as well as to various third-party registrations that included disclaimers of "cream."
Applicant maintains that neither a disclaimer of "Bristol" nor resort to Section 2(f) as to "Bristol" is necessary to register its mark because the term is not primarily geographically descriptive of its cakes flavored with its sherry wine. Applicant "acknowledges that Bristol, England is a place generally known to the public, but submits, however, that the public cannot reasonably make a goods/place association between Bristol, England and sherry wine or bakery goods and that the Examining Attorney failed to establish any goods/place association." (brief, p. 12). Applicant furnished the following materials: a listing of 122 registrations of its mark HARVEYS BRISTOL CREAM in 88 foreign countries, none of which, according to applicant, includes a disclaimer; [FN5] excerpts retrieved from the NEXIS data base showing no uses of the words "Bristol Cream" except as part of applicant's mark HARVEYS BRISTOL CREAM; product literature (distributed by applicant's parent company) which covers applicant's sherry wines; and the declaration of Roger Moore, identified as "Head of Trade Marks for Allied-Lyons PLC of which [applicant] is a wholly owned subsidiary." Mr. Moore claims that he has no idea why applicant claimed acquired distinctiveness in an earlier registration and also asserts, in pertinent part, as follows:
*2 4. BRISTOL is the name of a city in England, that city is not noted for producing cream. BRISTOL CREAM is not known as a flavoring (like IRISH CREAM) and BRISTOL CREAM has no meaning in connection with alcoholic beverages or bakery goods. BRISTOL CREAM is fanciful in connection with alcoholic beverages and bakery goods and a trademark of the highest order.
Attached to applicant's reply brief are, in relevant part, excerpts from a gazetteer and a dictionary.
In order for registration to be properly refused under Section 2(e)(2), it is necessary to show that (i) the mark sought to be registered is the name of a place known generally to the public, and that (ii) the public would make a goods/place association, that is, believe that the goods for which the mark is sought to be registered originate in that place. See: In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB1988), citing In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed.Cir.1987). Where there is no genuine issue that the geographical significance of a term is its primary significance and where the geographical place is neither obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact that the applicant's own goods come from the geographical place named in the mark. See: In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB1982).
In the present case, applicant has conceded, as noted above, that Bristol is the name of a place in England and that it is known generally to the public. Thus, the crux of this appeal centers on the second half of the test set forth in In re Societe Generale, namely, whether the American public would make a goods/place association, that is, believe that the goods for which the mark is sought to be registered originate in that place named in the mark. In re Societe Generale, supra at 1452. ["We take the reference to the public to mean the American public because the Board was well aware that we are not concerned with the public in other countries ... Vittel is therefore not primarily geographically descriptive, at least in this country which is all that matters."]. The burden is on the Examining Attorney to prove that American purchasers would expect that the cakes identified in the application and intended to be sold under the mark HARVEYS BRISTOL CREAM have their origin in Bristol, England. The bases for the Examining Attorney's finding of geographical descriptiveness here are that applicant is located in Bristol, England (and, thus, Bristol, England is "presumably the origin of the applicant's goods"), and that, according to Lichine's, cream sherry was developed in Bristol and is now bottled in Bristol.
At the outset, we acknowledge that applicant's headquarters are located in Bristol, England, that applicant's sherry wine was bottled, at one time, in Bristol, and that applicant's cakes are flavored with applicant's sherry wine sold under the mark HARVEYS BRISTOL CREAM. Applicant recounts its past connection with Bristol, England as follows (reply brief, p. 4):
*3 HARVEYS BRISTOL CREAM sherry wines, which provides [sic] flavoring for Applicant's cakes, were developed and have always been produced in Jerez de la Frontera, Spain. In years long past, the sherry wines were shipped in casks to Bristol and other places for bottling, after the sherry wines had been produced in Spain. That practice was solely for economic and tariff reasons. Under former maritime conditions, bottles of sherry wine would break or disappear otherwise in transit. Unlike bottling of champagne, in which bottling techniques affect bubbling and thus quality of goods, bottling of HARVEYS BRISTOL CREAM sherry wines is nothing more than transferral of the goods from larger containers to smaller ones for the sake of consumer convenience.
Current product literature regarding applicant's sherry wines refers to Jerez de la Frontera, Spain as
the location for all of Harveys' blending, bottling and distribution.... There's [sic] extensive vineyards, traditional bodegas, and large modern sherry bodegas with the most up-to-date blending and bottling facilities. This is where the world-famous Harveys Bristol Cream originates.
Applicant also submitted the listing for "Bristol" in The Columbia Lippincott Gazetteer of the World. In addition to a listing for Bristol, England, there are fifteen listings for domestic places named "Bristol," including cities in Connecticut and Tennessee, towns in New Hampshire and Vermont, and a county in Massachusetts. The first and lengthiest listing in the gazetteer is for Bristol, England, indicating that the city's main industries are shipbuilding and the manufacturing of shoes, leather, chocolate, tobacco products, aircraft and tires. Bristol, England is described as an important flour-milling center, and exports from the city include chemicals, cotton, tin, salt, machinery, petroleum products, chocolate, glass, pottery, soap and leather goods. The listing makes no mention of either bakery products or sherry wines.
After careful consideration, we find that "Bristol" is not primarily geographically descriptive when applied to applicant's cakes. The mere fact that applicant's headquarters are in Bristol, England does not mandate a finding here that a goods/place association should be presumed. See: In re Gale Hayman Inc., 15 USPQ2d 1478, 1479 (TTAB1990). For "Bristol" to be primarily geographically descriptive of applicant's cakes, Bristol, England would have to be associated with cakes flavored with sherry wine in such a way that the American public would be likely to assume that Bristol, England was the place in which these cakes originated. In this connection, in considering the competing evidence of record, we do not find the excerpt from Lichine's to be dispositive of the goods/place association issue. We recognize, of course, that the Lichine's listing states that cream sherry originated in Bristol, England and that some cream sherries, including applicant's, are bottled there. [FN6] We wonder, however, how many people in this country know either of those purported facts. Here, there is nothing in the record that indicates, or even suggests, that American purchasers would believe that Bristol, England was or is now the place of production of applicant's cakes flavored with sherry wine (the wine, in point of fact, now being blended, bottled and distributed in Spain while the cakes are produced in Conshohocken, Pennsylvania). See: In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725, 1727 (Fed.Cir.1990). The lone reference work submitted by the Examining Attorney is outweighed by the other evidence of record which bears on our assessment of the likely reaction of purchasers if they were to encounter applicant's mark on applicant's goods. Dictionaries and the gazetteer make no mention of cream sherry. Applicant's search of "Bristol Cream" in the NEXIS data base revealed uses of the words only as part of applicant's registered mark. Finally, neither applicant's sherry wines nor cakes flavored therewith come from Bristol, England; the only connection appears to be that applicant's headquarters are located there and that applicant's sherry wine was bottled there at one time. In short, the evidence is insufficient to show that American consumers are likely to think that Bristol refers to a place where the goods come from.
*4 Applicant's prior registrations which include disclaimers or claims of acquired distinctiveness are of little moment. We are not privy to the files of those registrations; moreover, the Board is not bound by any such prior determinations by the Office.
The facts in the present case are to be contrasted with those in In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB1993), a decision to which the Examining Attorney referred at the oral hearing. [FN7] In that case NANTUCKET NECTARS was found to be primarily geographically descriptive of soft drinks. While the applicant's soft drinks were manufactured in Worcester, Massachusetts, applicant's headquarters and center for research and development were located on Nantucket. The Board, in reaching its conclusion, relied principally on the labels submitted as specimens which, in the Board's view, would foster a goods/place association among purchasers. The labels bore a picture of Nantucket town, making reference to "Faraway Isle" ("Nantucket" is an Indian word meaning "that faraway island"). In the present case, applicant is headquartered in Bristol but, as noted above, the cakes are produced elsewhere (Conshohocken, Pennsylvania), as is applicant's sherry wine (Spain). More significantly, here the involved application is based on an intention to use and, thus, the Board does not have the benefit of any evidence of actual use, such as label specimens.
In summary, this refusal fails because no goods/place association in the American public's mind was established. To the extent that any evidence of record raises a doubt about our conclusion here, we elect to resolve that doubt in favor of applicant. Then, when the mark is published, any person who has a legitimate interest in the use of the geographic name claimed by applicant may file an opposition. Cf. In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed.Cir.1987) [on issue of mere descriptiveness, reasonable doubts are resolved in favor of the applicant, citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB1972), "on the theory that any person who believes that he would be damaged by the registration will have an opportunity ... to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that effect."]. See also: In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA1982) (Nies, J., concurring) ["Protection and registration of geographic names as marks embodies concepts comparable to those applicable to surnames as well as to terms which are descriptive of the nature or quality of goods or services."]; and 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 14.01 (3d. ed. 1994) ["Geographically descriptive terms are placed in the same category as terms that are descriptive of some quality or feature of [the] goods."].
*5 Decision: The refusal to register is reversed.
J.E. Rice
R.F. Cissel
T.J. Quinn
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/129,357, filed January 10, 1991, alleging a bona fide intention to use the mark in commerce. Applicant indicates that it owns Registration No. 300,796 for the mark BRISTOL CREAM for "sherry wine"; Registration No. 1,458,628 for the mark HARVEYS BRISTOL CREAM and design for "wines"; and others.
FN2. An Examining Attorney cannot "require" an applicant to claim acquired distinctiveness and, thus, a failure to comply with such a requirement is not a proper ground for refusal. Nonetheless, the Examining Attorney viewed the term "Bristol" as primarily geographically descriptive and, thus, essentially suggested that a Section 2(f) claim be submitted, no doubt due to applicant's many successful years of use of the same mark in connection with sherry wines.
FN3. In the final refusal issued September 30, 1991, the Examining Attorney viewed the words "Bristol Cream" to be primarily geographically descriptive. However, in considering a request for reconsideration, the Examining Attorney, in her Office action dated April 7, 1992, referred to additional evidence submitted by applicant which showed that applicant's sherry sold under HARVEYS BRISTOL CREAM is produced and bottled in Spain. The Examining Attorney then went on to refuse registration on the ground that the mark is primarily geographically deceptively misdescriptive, stating that "applicant's goods do not come from [Bristol]." In her appeal brief, however, the Examining Attorney frames the issue on appeal as being whether the term "Bristol" is primarily geographically descriptive, stating that "applicant's goods come from the geographical place named in the mark." (Appeal brief, p. 2). So as to clear up any uncertainty on this point, the Examining Attorney, in response to the Board's inquiry at the oral hearing, indicated that the final refusal is based on her view that "Bristol" is primarily geographically descriptive.
As a note of interest, we should point out that P.L. 103-182, signed by the President on December 8, 1993, implemented the provisions of the North American Free Trade Agreement (NAFTA). The new law, which took effect January 1, 1994, made changes to the Trademark Act, including changes to Section 2. Section 2(e)(2), as amended, now concerns marks that are "primarily geographically descriptive" and Section 2(e)(3), as amended, now concerns marks that are "primarily geographically deceptively misdescriptive." Pursuant to the NAFTA changes to the Trademark Act, marks that are primarily geographically deceptively misdescriptive under Section 2(e)(3) may no longer be registered under Section 2(f). However, Section 2(f), as amended by the North American Free Trade Agreement Implementation Act, contains a grandfather clause that permits registration under Section 2(f) of primarily geographically deceptively misdescriptive marks "which became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act."
FN4. Applicant and the Examining Attorney submitted exhibits with their briefs. Some of these exhibits were not previously made of record. See: Trademark Rule 2.142(d). However, we deem the exhibits to be of record inasmuch as neither applicant nor the Examining Attorney objected, even at the oral hearing, to the evidence submitted by the other. Their arguments lead us to believe that they considered these materials to be of record and proper for consideration by the Board. In any event, with respect to the dictionary and gazetteer materials, the listings therein comprise matter of which we can take judicial notice. See: B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed.Cir.1988). See also: Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227 (TTAB1989).
FN5. These registrations, issued under trademark laws different from the one in the United States, obviously are irrelevant to our analysis.
FN6. We note that while applicant's cream sherries were bottled at one time in Bristol, Lichine's has informed applicant, pursuant to applicant's request, that future editions will have text indicating that the product is now bottled in Jerez de la Frontera, Spain. We also note that applicant criticizes, at some length, the general accuracy of Lichine's, describing it as replete with misinformation. We would point out that we do not share applicant's characterization of this reference work. We simply have no way of evaluating applicant's allegations in this regard. Suffice it to say that applicant's criticisms have played no role in our determination of the merits of this appeal.
FN7. This decision was issued on August 11, 1993, too late to allow citation thereto in the briefs.